USPTO Patents Application 09888247

Appln. No. 09/888,247
Amendment dated Aug. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

IBM Docket No. BOC9-2000-0055

REMARKS/ARGUMENTS

These remarks are made in response to the Office Action of May 19, 2005 (Office
Action). This response is filed after the 3 -month shortened statutory period, and as such, a
retroactive extension of time is hereby requested. The Examiner is authorized to charge
the appropriate extension fee to Deposit Account 50-0951.

In the Office Action, Claims 6, 7, 9 and 10 were rejected under 35 U.S.C. § 102(b)
as being anticipated by U.S. Patent No. 6,044,398 to Marullo, et al (hereinafter
"Marullo"). Claims 1, 2, 3, 4, 5, 8 and 11 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marullo in view of U.S. Patent No. 6,868,434 to Terranova, et
al (hereinafter 'Terranova").

Independent Claims 1, 4, 6, 7, 8 9, 10, and 11 have been amended to recite
additional aspects of Applicant's invention. The amendments are supported in the
specification at page 12, line 15 through page 13, line 16, for example, and throughout
the specification. No new matter has been added by virtue of the amendments.

I. Applicants' Invention

It may be helpful to reiterate certain aspects of Applicant's invention prior to
addressing the cited references. One aspect, pertinent to an e-commerce environment, is
the empirical validation of an on-going availability of one or more back-end systems used
to verify and clear on-line transactions, such as credit card clearing, shipping and
handling, tariff computing, and other types of commercial transactions. (See, e.g.,
Specification, p. 9, lines 1 - 8.)

One embodiment of the invention, typified by Claim 1, as amended, is a
monitoring tool. The monitoring tool includes a placebo transaction dispatcher for
dispatching placebo transactions to at least one subscribing e-commerce system, and
response collector for collecting responses to the dispatched placebo transactions. The

10

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Atfg. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

monitoring tool also includes a logger for computing transaction latency data based upon
when a placebo transaction is dispatched to a subscribing e-commerce system, and when
a response is received in the collector. The monitoring tool further includes a multi-
dimensional status array, such as a two-dimensional array, whose elements are indexed
by a URL and sample size of each subscribing e-commerce system.

Each element of the status array includes an indicator indicating that a placebo
transaction has been submitted to a corresponding subscribing e-commerce system, an
indicator indicating whether a response has been received from the corresponding
subscribing e-commerce system, transaction latency data associated with the
corresponding subscribing e-commerce system, and an average response time computed
for the corresponding subscribing e-commerce system. (See, e.g., Specification, p. 12,
line 19 -p. 13, line 6.)

Additionally, the monitoring tool includes an alerter. The alerter operatively alerts
a subscribing e-commerce system when computed transaction latency data indicates that
an unreliable response condition has occurred in an associated back-end transaction
processing system.

II. The Claims Define Over The Prior Art

As noted above, independent Claims 6, 7, 9, and 10 were rejected as being
anticipated by Marullo. Independent Claims 1, 4, 8, and 11 were rejected as being
unpatentable over Marullo in view of Terranova.

Marullo is directed to an Internet website "virtual" browser application that
automatically "exercises" and verifies web server applications and scripts. (Col. 4, lines
49 - 54; Abstract.) The exercising and verification is performed, according to Marullo,
by simulating a web browser to request, capture, store, and verify data returned from web
servers.

{WP253089;!}

11

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Aug. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

Applicant respectfully asserts, however, that Marullo fails to teach, either
expressly or inherently, each feature recited in independent Claims 6, 7, 9, and 10, as
amended. For example, Marullo fails to expressly or inherently teach the recording of a
plurality of elements in a status array indexed by a URL and a sample size for each back-
end transaction processing system.

Marullo discloses a log file in which is logged a simulated browser request and its
corresponding byte count. The log file further permits a count of bytes transferred, a time
of transaction, and a throughput or transfer time to be logged. (See Col. 5, lines 1 - 3;
Col. 8, lines 17-55; and Abstract.) The log file in Marullo, however, is not presented as
a status array. Marullo is couched strictly in terms of a virtual application browser
interacting with a single "banking application." (See, e.g., Col. 6, lines 8-18 and lines
50 - 55.) It follows that Marullo has no use for, nor does the reference teach, a multi-
dimensional status array that is indexed by a URL and a sample size for each different
back-end transaction processing system, as disclosed in each of the independent claims,
as amended.

The log file in Marullo, not being a multi-dimensional, indexed status array,
accordingly, can not contain array elements that include an indicator indicating that a
placebo transaction has been submitted to a corresponding subscribing e-commerce
system, an indicator indicating whether a response has been received from the
corresponding subscribing e-commerce system, or an indicator indicating whether a
latency threshold has been exceeded by the corresponding subscribing e-commerce
system.

Moreover, nowhere does Marullo remotely suggest that an average response time
for each subscribing e-commerce system is determined and stored in an element of a
multi-dimensional status array, as further recited in each of the amended independent

12

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Au'g. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

claims. Indeed, as noted at page eight of the Office Action, Marullo does not address
measuring transaction latency data at all.

Although Terranova is cited as disclosing testing of server latencies using multiple
concurrent users of a computer system, Applicant respectfully asserts that Terranova
similarly fails to teach or suggest a multi-dimensional, indexed status array. A "setup
program" of Terranova creates multiple users on a server in a computer system. (Col. 2,
lines 6-7; Col. 4, lines 16 - 18.) The program of Terranova also creates home
directories for the users and populates them with files according to the particular type of a
user. (Col. 4, lines 18 - 20.) The directories so created by Terranova do not constitute
multi-dimensional, indexed status arrays, as recited in each of the amended independent
claims. More particularly, none of the directories are indexed, least of all indexed
according to a URL and a sample size for each back-end transaction processing system.

Instead, as already pointed, each directory is populated with a set of files that
corresponds to a particular user's type. (Col. 6, lines 29 - 43.) A "directory enumeration"
of the files in a particular user's directory merely lists the files. Again, there is no
indexing and none of the entries in the list corresponds to an indicator indicating that a
placebo transaction has been submitted to a corresponding subscribing e-commerce
system, an indicator indicating whether a response has been received from the
corresponding subscribing e-commerce system, or an indicator indicating whether a
latency threshold has been exceeded by the corresponding subscribing e-commerce
system.

Applicant thus respectfully maintains that neither Marullo nor Terranova, alone or
in combination, teaches or suggests each feature of amended independent Claims 1,4,6,
7, 8, 9, 10, and 11, and that, therefore, the amended independent claims define over the
prior art. Applicant further respectfully submits that whereas Claims 2 and 3 each

13

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Aug. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

depend from amended independent Claim 1, while reciting additional features, these
claims, too, define over the prior art.

III. A pplicants' Invention Antedates Terranova

Applicant further respectfully asserts that regardless of what Terranova teaches or
suggests, the reference is not prior art as to Applicants' invention. Submitted herewith is
Applicant's Declaration pursuant to 37 C.F.R. § 1.131 supporting the removal of
Terranova as a reference. Applicant's Declaration is accompanied by a copy of
Confidential Invention Disclosure No. BOC8-2000-0046 (hereinafter "Disclosure")
entitled "Low-Cost Monitor and Alert Application for Global Merchant Service." The
Disclosure demonstrates proof of conception for the claimed subject matter of the
Applicant's invention at least as early as April 27, 2000, which predates the August 7,
2000 effective date of Terranova. Additionally submitted herewith is evidence of activity
on specific dates that show Applicant's continued diligence from prior to the effective
date of Terranova.

The present application, including each claim, is based upon Applicants'
Disclosure. Applicant's employer and assignee of the present application, International
Business Machines (IBM), establishes rigorous procedures governing the use of such
disclosures, generally. The inventor submitted the Disclosure on April 28, 2000, to an
IBM Attorney/Patent Professional. IBM's own procedures preclude substantive
modification of such a disclosure once submitted, and, as Applicant affirms in the
accompanying Declaration, the Disclosure was not substantively modified following its
submission to the IBM Attorney/Patent Professional. The inventor reviewed the present
application prior to its submission to the U.S. Patent and Trademark Office so as to insure
that the claims and subject matter contained therein were fully supported by the
Disclosure.

14

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Aifg. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

Each of the claims in the application are fully supported in the Disclosure,
including the aspects of response, or latency, times and the use of status arrays. (See,
e.g., p. 2, paragraph 5.) The Figure contained in the Disclosure is virtually identical to
FIG's. 2 and 3 in the application.

Applicant exercised due diligence from prior to the effective date of Terranova
continuously to June 22, 2001, when the present application was filed. With respect to
Applicant's diligence it is to be noted that, as set forth in the Declaration, once an IBM
invention disclosure form is completed, the disclosure is reviewed by an Invention
Review Board (hereinafter the "Board") within IBM to determine whether to prepare an
application based upon the submitted disclosure. Upon the Board's reaching a decision to
prepare an application, outside counsel is selected to prepare the application, and
instructions in this regard, together with the IBM invention disclosure form, are conveyed
to the outside counsel.

In this instance, during the period between April 28, 2000, and June 22, 2001, the
Board conducted an inquiry as to the patentability of the invention and assigned the
application to outside counsel to prepare a patent application based on the Disclosure. As
is a common practice in the profession, outside counsel prepares cases on a "first come,
first served" basis unless a bar date dictates that the preparation be given priority within
the work queue. As proof that the present application was included within the work
queue and receiving due attention, Applicant provides herewith pages from their Firm
Docket regarding the application [outside counsel docket number 6169-190], dated
January 2, 2001, March 2, 2001, April 2, 2001, May 2, 2001, and June 2, 2001 (redacted
to insure confidentiality of other Firm clients and attached as part of the Composite
Exhibit ).

Outside counsel iteratively reviewed and revised the drafted application with the
inventor. This activity during the pertinent period is consistent with the legal

15

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Aug. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

requirements for a showing of diligence noted, for example, in MPEP § 715.07(a). As
proof of diligence-evidencing activities, Applicants refer the Examiner to the following
documents which are also contained in Composite Exhibit, attached hereto:

1. October 2, 2000, correspondence from IBM requesting the preparation of a
patent application based on the Disclosure;

2. October 11, 2000, correspondence from the outside counsel to IBM in-
house counsel confirming receipt of the disclosure and instructions to
prepare a patent application based thereon;

3. May 11, 2001, correspondence from outside counsel to the inventor
forwarding a draft of the present application for the inventor's review and
facsimile confirmation sheet;

4. June 21, 2001, correspondence from outside counsel forwarding the final
draft of the application and facsimile confirmation sheet.

Applicant respectfully maintains that the evidence provided clearly establishes
reasonable diligence from a time prior to the effective date of Terranova to the filing date
of the present application. Applicant further respectfully maintains that the evidence
shows that Applicant's diligence was exercised in constructively reducing the invention to
practice between the date of the Disclosure, until the filing date of the present application.
Accordingly, Applicant respectfully requests that Terranova be withdrawn as a reference.

CONCLUSION

Applicant believes that this application is now in full condition for allowance,
which action is respectfully requested. Applicant requests that the Examiner call the
undersigned if clarification is needed on any matter within this Amendment, or if the

16

{WP253089;!}

Appln. No. 09/888,247 IBM Docket No. BOC9-2000-0055

Amendment dated Au*g. 19, 2005
Reply to Office Action of May 19, 2005
Docket No. 6169-190

Examiner believes a telephone interview would expedite the prosecution of the subject
application to completion.

Respectfully submitted,

Date: September 19, 2005

Gregory A. Nelson, Registration No. 30,577
Richard A. Hinson, Registration No. 47,652

AKERMAN SENTERFITT

Customer No. 40987

Post Office Box 3188

West Palm Beach, FL 33402-3188

Telephone: (561) 653-5000

{WP253089;!}

17